TRADEMARKS | EUIPO Board of Appeal on the distinctiveness of a geometrical position trademark

On 19 February 2024, the EUIPO Board of Appeal (the “BOA”) issued a decision in case R 514/2023, concerning the distinctive character of an EU position mark consisting of a geometrical shape (i.e. a polygon) applied to endpieces and rivets of glasses (the “Trademark”). The BOA deemed the Trademark devoid of distinctive character on the following grounds: (a) the shape claimed by the Trademark was not sufficiently original to be perceived as distinctive by consumers; (b) the positioning of an element consisting of a geometrical shape on rivets and hinges of glasses is fairly common in the relevant sector, also for functional purposes; (c) the survey filed by the applicant to prove the inherent distinctive character of the Trademark was not reliable since it focused on whether consumers look for the manufacturer’s trademark on the frontside temple of glasses, and not on how the specific positioning of the Trademark and/or the specific geometrical shape claimed by the Trademark would be perceived. Based on said assessment, the BOA stated that the Trademark would be perceived by consumers either as a mere decorative element or as a functional element rather than an indicator of origin, hence it lacked distinctive character.

Newsletter n. 95 – April 2024